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Friday May 26, 2017

Three-Dimensional Trade-marks

Authored by: Marc J. Belliveau Posted in: Intellectual Property

Does the shape of your favourite chocolate bar affect your decision to buy it? Does its size, length and other measurements entice you to purchase it, as opposed to its attractive packaging and famous brand name?

That is the legal issue arising from the UK Court of Appeal’s decision on May 17, 2017 denying Nestle’s decade-long efforts to register its iconic four-finger shape of the popular KitKat candy bars in Britain.

The winner in the case is Mondelez International, Inc. (who acquired Cadbury in 2010) who is concerned about the effect of monopolizing a particular shape of candy bar. Nestle, who acquired the original KitKat confectionery maker Rowntree in 1988, will likely appeal the court decision.

The first KitKat hit the British chocolate market in 1935. The shape of the candy is registered as a trade-mark in several countries, including Canada, Australia, France, and Germany.

In Canada, a person can apply to register any three-dimensional trade-mark, just like any other more traditional trade-mark, as long as it has acquired sufficient distinctiveness with consumers at the time of filing the application to register it. The Trade-marks Office must also determine whether the applied for shape is primarily functional, from either an ornamental or a utilitarian point of view, and if it is, the mark will not be registrable. For example, the Supreme Court of Canada has held that the shape of LEGO bricks is not a valid trade dress, as it consists solely of the functional characteristics of the bricks.

Although sometimes referred to as “trade dress” and “get up”, they are technically called “distinguishing guise” under the Trade-marks Act. A distinguishing guise is “a shaping of goods or their containers, or a mode of wrapping or packaging goods, the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.”

The classic example of a distinguishing guise is the old, ribbed Coca-Cola Ltd. soft drink bottle first used in Canada in 1936. In fact, Nestle has three distinguishing guise trade-mark registrations for KitKat chocolate shape; the four finger wafer shape (TMA601362), the two finger wafer shape (TMA601709), and the single finger wafer shape (TAM601833). Similarly, Mondelez has three geometric tread shape registrations in Canada for its Toblerone chocolate bars (previously owned by Suchard, and later by Kraft).

If your business deals in products and packaging which have unique visual characteristics, including 3D shapes and artwork, you may want to consider the benefits of legal protection which Canadian trade-mark registration can provide you. For more information on trade-marks please contact Marc Belliveau.

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